oa De Jure - The timeous enforcement of trade mark rights : notes

Volume 48, Issue 1
  • ISSN : 2225-7160



Ideally, a trade mark proprietor should take steps to enjoin infringing use as soon as possible after a third party commences use of a registered trade mark, such use amounting to infringement. The reality of commerce is, of course, that this does not always happen. Sometimes the proprietor might simply not be aware of the infringement. At other times the third party's use could be perceived not to be prejudicial at first, due to, inter alia, geographical considerations, the size of the operation, the nature of the goods produced or services rendered etc. The result could be that court proceedings are only instituted a number of years after use first began (but always on the assumption of course that the third party's use postdates the registration date of the proprietor's mark). By way of example, in 2009 (SCA) 158, a claim was considered on the merits despite a delay of six years (par 15). One question that needs answering here is what the legal consequences are when there is a delay before a trade mark right is enforced. Another, in what circumstances the delay can constitute a defence, and the various defences that could feature (waiver and consent are not dealt with here - see Sonnekus (2012) 161). These issues are discussed below (see also Alberts 'Check who's using yourtrade mark: The need for the timely enforcement of trade-mark rights' 2007 32).

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